Ex Parte SLONIMSKY

Patent Trial and Appeal Board

Feb 25, 2019

14469617 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/469,617
69054 7590
RECHES PA TENTS
211 North Union St.
Suite 100
FILING DATE
08/27/2014
02/27/2019
Alexandria, VA 22314
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
LIRON SLONIMSKY
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
8857-US2 3487
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OREN@I-P.CO.IL
MAIL@I-P.CO.IL
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIRON SLONIMSKY
Appeal2018-000967
Application 14/469,617
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER,
and ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-25, which constitute all the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies A WEAR SOLUTIONS LTD. as the real party in
interest (App. Br. 3).
Appeal2018-000967
Application 14/469,617
THE INVENTION
Appellant's claimed invention is directed to a "method for promoting
sales" through use of a "signal from a wireless tag located in [a] tangible
consumer product" that permits "issuing a reward associated directly with
the tangible consumer product." Abstract.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for promoting sales, comprising:
receiving by a server a request from a potential
customer's device for additional information about a wearable
product;
wherein the additional information is not included in a
wireless signal that is transmitted by a wireless tag concerning
the wearable product;
wherein the request is generated by a computerized
application hosted by the potential customer's device;
wherein the potential customer's device is a smartphone
equipped with a communication device capable of short range
communication with the wireless tag and capable of
communication over a cellular network;
wherein the wireless tag is positioned on the wearable
product or inside the wearable product;
wherein the computerized application is activated by a
potential customer on the potential customer's device after the
potential customer sees the wearable product and after the
potential customer's device receives from the wireless tag the
wireless signal concerning the wearable product;
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identifying by the server the wearable product according
to a value identifying the wearable product, the value
identifying the wearable product is included in the wireless
signal from the wireless tag;
transmitting the additional information to the potential
customer's device;
issuing, by the server and responsive to the request for
additional information, a reward associated directly with the
wearable product.
App. Br. 25 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Kwon US 2008/0194238 Al Aug. 14, 2008
Shoarinejad US 7,492,258 Bl Feb. 17,2009
Maytal US 2009/0106042 Al Apr. 23, 2009
Ku US 2009/0248520 Al Oct. 1, 2009
Gerdes US 2009/0287408 Al Nov. 19, 2009
Gamer US 2010/0075666 Al Mar. 25, 2010
Falk US 2010/0198873 Al Aug. 5, 2010
Isabell US 2010/0321161 Al Dec. 23, 2010
Pfuhl US 2013/0162429 Al June 27, 2013
Cole US 8,502,674 Bl Aug. 6, 2013
Boyd JR US 2013/0325525 Al Dec. 5, 2013
Plut US 2013/0325572 Al Dec. 5, 2013
Werner US 2014/0224867 Al Aug. 14, 2014
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Santaella US 2015/0170190 Al June 18, 2015
REJECTIONS
The Examiner made the following rejections 2:
RI: Claims 1-25 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 3.
R2: Claims 1-25 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 3--4.
R3: Claims 1-25 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 5.
R4: Claims 1-3, 11, 12, 19, 21, and 24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Werner and Kwon. Final Act. 8.
R5: Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Pfuhl. Final Act. 12.
R6: Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Cole. Final Act. 13.
R7: Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Werner, Kwon, and Isabell. Final Act. 14.
R8: Claims 8 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Werner, Kwon, and Falk. Final Act. 15.
2 The rejection of claim 25 under 35 U.S.C. § 112(b) was withdrawn in the
Answer. See Final Act. 4, Ans. 2.
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R9: Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Gamer. Final Act. 16.
RIO: Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Shoarinejad. Final Act. 17.
RI 1: Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Werner, Kwon, and Santaella. Final Act. 18.
RI2: Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Gerdes. Final Act. 19.
RI3: Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Ku. Final Act. 20.
RI4: Claims 17, 18, and 23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Werner, Kwon, and Plut. Final Act. 20.
RI5: Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Werner, Kwon, and Boyd JR. Final Act. 22.
RI6: Claim 25 stands rejected under 35 U.S.C. § 103 as being unpatentable
over W emer, Kwon, and Maytal. Final Act. 23.
ISSUES
The issues are whether the Examiner erred in finding:
1. claims 1-25 as failing to comply with both the written description
requirement and the enablement requirement;
2. the claimed invention to be directed to a judicial exception without
significantly more;
3. the combination of W emer and Kwon teaches or suggests the
limitation of "issuing, by the server and responsive to the request for
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additional information, a reward associated directly with the wearable
product," as recited in independent claim 1;
4. the combination of Werner and Kwon teaches or suggests the
limitation of "the reward is issued before the wearable product is
purchased," as recited in dependent claim 24;
5. the combination of Werner, Kwon, and Pfuhl teaches or suggests the
limitation of "identifying wearable product by the server despite the
changes in the value identifying the wearable product," as recited in
dependent claim 4;
6. the combination of Werner, Kwon, and Cole teaches or suggests the
limitation of
the value identifying the wearable product changes according to
other values sent between the potential customer's device and the
wireless tag; and wherein the method comprises identifying the
wearable product by the server despite the changes in the value
identifying the wearable product,
as recited in dependent claim 5; and
7. the combination of Werner, Kwon, and Plut teaches or suggests the
limitation of
storing by the server a log of previous events associated with the
wearable product and sending by the server a message to an
electronic device associated with an owner of the wearable product
when a change in rewards characteristics exceeds a predetermined
value,
as recited in dependent claim 23.
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ANALYSIS
Except where indicated, we adopt the Examiner's findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to unilaterally review those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
Issue 1
Appellant argues that "claim 1 does not claim that the server or the
potential customer device or the wireless tag [identifies] when the potential
customer sees the wearable product" and "the potential customer cannot
activate the computerized application before seeing the wearable product-
as he needs to see the wearable product before starting the process illustrated
in claim 1" (App. Br. 12).
We agree with Appellant. The Examiner finds that "it is unclear how
the invention knows that the user has seen the wearable product. There is
no mechanism described in the specification which shows how the invention
knows that the user sees or has seen the wearable product" (Ans. 2, emphasis
in original). The claim does not require that the "invention knows that the
user has seen the wearable product"; rather, the claim requires the "potential
customer sees the wearable product" and thereafter "the potential customer's
device receives from the wireless tag the wireless signal concerning the
wearable product." As indicated in the disclosure, more than one wireless
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signal may be picked up by the potential customer's device, and then the
user is presented with a set of products to choose from. See Fig. 3 and Spec.
17: 13-23. While it may be possible for the user to see a wearable product
that is outside of the range of the wireless signal for the application to detect
( and thus the wearable product is not identified), that occurrence is excluded
by the claim. Accordingly, we are constrained by the record to reverse the
Examiner's rejections of claims 1-25 under 35 U.S.C. § 112(a), as failing to
comply with both the written description and enablement requirements.
Issue 2
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because
the user's interest in a wearable product is used to target
information about the wearable product to the user and provide
the user with a reward. As such, the description in claim 1 of
receiving a request from a potential customer for additional
information about a wearable product, identifying the wearable
product according to a value identifying the wearable product,
transmitting the additional information to the potential
customer, issuing a reward associated with the wearable
product is an abstract idea
(Final Act. 6) and
the ordered combination of steps describe a marketing practice
of providing targeted information based on information known
about the user, which leads to the conclusion that the ordered
combination does not add anything further than looking at the
limitations individually. Selecting additional information about
a wearable product would be performed the same way with or
without a computer
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(Final Act. 7; see also Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208,
217 (2014) (Describing the two-step framework "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.")).
After the mailing of the Answer and the filing of the Brief in this case,
the USPTO published revised guidance on the application of§ 101. (2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (hereinafter "Memorandum").) Under the Memorandum, the Office
first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
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We agree with the Examiner that the claim recites an abstract idea
(here, certain methods of organizing human activity as a fundamental
economic process), because claim 1 recites "promoting sales" as it issues "a
reward associated directly with the wearable product." Such an issuance of
a reward may sway a potential customer that is on the fence to make a query
for additional information regarding a product, and nudge that potential
customer into a sale that would not have occurred but for the enticement of
the reward. Such a promotion is an abstract fundamental economic practice.
If the claim recites an abstract idea, we then "must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
Appellant contends that
[t ]he subject matter of claim 1 includes the establishment of
communication between specific devices ( server, wireless tag
included in or connected to a wearable product, and a potential
customer's device that is a smartphone with a communication
device capable of short range and cellular communication) to
exchange information (between the smartphone the server and
the wireless tag) regarding a concrete wearable product that is
carried by a person
(App. Br. 14). We agree with Appellant, as use of the wireless tag, and its
communication with the customer's smartphone, and the subsequent
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communication between the customer's smartphone and server, transforms
the multiple wireless communications into "additional information" the
potential customer desires, thereby integrating the sales promotion into a
practical application that is a patent-eligible invention pursuant to the
Memorandum.
Accordingly, we reverse the Examiner's rejection of claims 1-25
under 35 U.S.C. § 101.
Issue 3
Appellant argues that W emer "fails to teach or suggest issuing, by the
server and responsive to the request for additional information, a reward
associated directly with the wearable product (App. Br. 19 (emphasis in
original), citing W emer ,r,r 14 7, 149), because "the owner gets credit ONLY
IF THE USER PURCHASES THE ITEM" (App. Br. 20, citing Werner
,r 149).
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that
W emer specifically says that in response to a user tapping an
item (tapping means using the mobile device to read the
wireless tag) the user is provided with an opportunity to buy the
item at a preferred price from a website (i.e.[,] discount) or may
receive at their mobile device a voucher which may be
redeemed at retail locations allowing the user to purchase the
item at a preferred price. Both the opportunity to buy the item
at a preferred price on a website and a voucher are a reward
issued for requesting additional information
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(Ans. 7, citing Werner ,r 147). Appellant's argument is not commensurate
with the scope of the claim, as the claim does not require the reward have
redeemable value irrespective of whether a purchase is made.
Accordingly, we sustain the rejection of independent claim 1, and
dependent claims 2, 3, 6-22, and 25 not argued separately. See App. Br. 20-
24.
Issue 4
Appellant argues that "Werner fails to teach or suggest ( and even
teaches away from) the reward is issued before the wearable product is
purchased'' (App. Br. 20 (emphasis in original), citing Werner ,r 149).
We are not persuaded by Appellant's argument. The Examiner finds,
and we agree, that
[b ]oth the opportunity to buy the item at a preferred price
( discount) on the website and the voucher to buy the item at a
preferred price in a retail store are both given prior to a
purchase directly in response to the user requesting additional
information by scanning the wireless tag
(Ans. 8; see also Ans. 7, citing Werner ,r 147). Werner's discount and
voucher, unlike a rebate, are issued prior to purchase. Accordingly, we
sustain the Examiner's rejection of dependent claim 24.
Issue 5
Appellant argues that "Pfuhl fails to teach or suggest identifying the
wearable product by the server despite the changes in the value identifying
the wearable product" (App. Br. 21 ( emphasis in original), citing Pfuhl
,r 27).
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We are not persuaded by Appellant's argument. The Examiner finds,
and we agree, that Pfuhl
teaches an RFID tag embedded in a suitcase which can be
periodically updated by the user to update bag identifying
information such as the owner[']s name, address, contact
information, etc. Thus if someone were to scan the tag, it
would show the updated information and still provide the
identifying information of the tag
(Ans. 9, citing Pfuhl ,r 27). Appellant fails to challenge the Examiner's
findings regarding the updating of bag-identifying information, as no Reply
was filed.
Accordingly, we sustain the Examiner's rejection of dependent claim
4.
Issue 6
Appellant argues that "Figure 9 [ of Cole] merely illustrates a method
for registering an object to be tracked by a mobile device. Step 908 includes
receiving a security code -that must be defined in order to track (in the
future) the object" (App. Br. 22, citing Cole Fig. 9, 6:30-51).
We are not persuaded by Appellant's argument. The Examiner finds,
and we agree, that
Cole teaches appending a security code onto the identifier
contained in the RFID tag. When the RF signal is received
from the RFID tag, the tag will be identified only if the security
code is defined. Therefore, Cole teaches adding information
onto the identifier and still being able to identify the object.
Therefore, Cole teaches adding information onto the identifier
and still being able to identify the object
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(Ans. 10, citing Cole 6:30-51 ). Appellant fails to challenge the Examiner's
findings regarding the identification of the tag once the security code is
appended and defined, as no Reply was filed.
Accordingly, we sustain the Examiner's rejection of dependent claim
5.
Issue 7
Appellant argues that
Plut teaches of providing awards based on the total value of
purchases - but this does not amount to a change in rewards
characteristic - and especially does not teach or suggest
sending by the server a message to an electronic device
associated with an owner of the wearable product when a
change in rewards characteristics exceeds a predetermined
value
(App. Br. 23 (emphasis in original), citing Plut ,r 141).
We are not persuaded by Appellant's argument. The Examiner finds,
and we agree, that "Werner teaches tracking check-ins of an item based on
the wireless tag in the item being scanned" and "Werner teaches sending
message including by way of text, email, or push messages" (Ans. 10, citing
Werner ,r,r 14, 163). The Examiner further finds, and we agree, that
Plut teaches a referral system that only provides a reward when
the purchase from the referred user exceeds a certain amount of
money. The amount of money required to earn the reward is
considered to be the predetermined value, the total amount of
the purchase is considered to be the change in the reward
characteristic, and the purchase amount is considered the
reward characteristic
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( Ans. 10-11, citing Plut ,r 141 ). Appellant argues Plut individually and fails
to consider the combination of the teachings of the references. "[O]ne
cannot show non-obviousness by attacking references individually where ...
the rejections are based on combinations of references." In re Keller, 642
F.2d 413,426 (CCPA 1981). Appellant further fails to challenge the
Examiner's findings regarding Plut's teachings and the interpretation of
claim 23, as no Reply was filed.
Accordingly, we affirm the Examiner's rejection of dependent claim
23.
CONCLUSION
The Examiner erred in finding:
1. claims 1-25 as failing to comply with both the written description
requirement and the enablement requirement; and
2. the claimed invention to be directed to a judicial exception without
significantly more.
The Examiner did not err in finding:
3. the combination of W emer and Kwon teaches or suggests the
limitation of "issuing, by the server and responsive to the request for
additional information, a reward associated directly with the wearable
product," as recited in independent claim 1;
4. the combination of Werner and Kwon teaches or suggests the
limitation of "the reward is issued before the wearable product is
purchased," as recited in dependent claim 24;
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5. the combination of Werner, Kwon, and Pfuhl teaches or suggests the
limitation of "identifying wearable product by the server despite the
changes in the value identifying the wearable product," as recited in
dependent claim 4;
6. the combination of Werner, Kwon, and Cole teaches or suggests the
limitation of
the value identifying the wearable product changes according to
other values sent between the potential customer's device and the
wireless tag; and wherein the method comprises identifying the
wearable product by the server despite the changes in the value
identifying the wearable product,
as recited in dependent claim 5; and
7. the combination of Werner, Kwon, and Plut teaches or suggests the
limitation of
storing by the server a log of previous events associated with the
wearable product and sending by the server a message to an
electronic device associated with an owner of the wearable product
when a change in rewards characteristics exceeds a predetermined
value,
as recited in dependent claim 23.
DECISION
The Examiner's decision rejecting claims 1-25 under
35 U.S.C. § 112(a) is reversed.
The Examiner's decision rejecting claims 1-25 under
35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 1-25 under
35 U.S.C. § 103(a) is affirmed.
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The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 3 7
C.F.R. § 4I.50(a)(l). No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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